Early case: "No, we're not amending, why are you bugging us?" Late case: "Oh no! There was a deadline to amend?"Eric Rothermel, Unsplash
Rule 16 says that a schedule "may be modified only for good cause and with the judge’s consent." This rule comes up any time a party wants to do something after a deadline set in the scheduling order, which is one of the more common litigation issues.
Parties will often, for example, let the deadline to amend the pleadings pass by, only to later realize that they want to assert an inequitable conduct defense (defendants) or wrap in a related entity (plaintiffs).
Good cause requires diligence, and in practice parties often frame the diligence discussion …
In Charles Smith Enterprises, LLC v. Catapult Sports, Inc., C.A. No. 21-1278-CFC (D. Del.), the parties filed a 60-page joint claim construction brief that included disputes on a number of terms where one party or the other proposed "plain and ordinary meaning" or "no construction necessary" while the other side proposed a specific definition for the terms.
By my count, for every single one of the parties' 15 disputed terms, one side or the other proposed "plain and ordinary meaning" or "no construction necessary" with no alternative construction—before Chief Judge Connolly, no less. These counsel clearly don't readthisblog.
In some instances, the parties just briefed the terms in an odd way. …
On Thursday, Judge Andrews granted a motion for summary judgment of invalidity for claims that failed to include a limitation from the spec.
In MHL Custom, Inc. v. Waydoo USA, Inc., C.A. No. 21-091-RGA (D. Del. Feb. 2, 2023), the patent at issue described a "passively stable hydrofoil." The hydrofoil is a board that a person can ride in the ocean, with a big fin under the water to keep it stable:
The hydrofoil at issue, from U.S. Pat. No. 9,586,659U.S. Pat. No. 9,586,659
As the Court describes, the whole patent is focused on the board's stability feature:
The specification of the '659 Patent only, and repeatedly, describes the …
Un-bifurcated (but probably not worth $42m)AI-Generated, displayed with permission
We wrote in December about how Judge Williams granted defendant's motion to bifurcate the jury trial in Board of Regents, the University of Texas System v. Boston Scientific Corp., C.A. No. 18-392-GBW (D. Del.).
That trial went forward starting last week, and the trial extended into this week. As we mentioned before, Judge Williams split the trial into two phases:
Direct infringement and invalidity
Willful infringement, damages, knowledge, and intent for induced infringement
Near the conclusion of Phase 1, plaintiff moved to "unbifurcat[e]" the trial. According to the transcript:
MR. SHORE [for plaintiff]: Your Honor, we would like for the Court to consider over the weekend, not …
In the before time, when the green grass grew tall even in the wan Wilmington sun, all scheduling orders had two rounds of contentions, one early in the case and another near the close of fact discovery. A bit over two years ago, Judge Connolly shook things up by introducing a new form order in his cases that included only a single round of contentions early in the case and requiring "good cause" to amend.
AI-Generated, displayed with permission
And so, on this slow news day, I decided to take a look back at how often parties manage to show the requisite good cause to amend their contentions in cases assigned to Judge Connolly (many of these are decided in the first instance by a magistrate judge).
The upshot is, that most of these motions seem to succeed. DocketNavigator shows 10 such motions in cases assigned to Judge Connolly (which strikes me as low, but I'm not a soulless trawling algorithm, so what do I know?). Of those 7 have been granted, and only 3 have been denied. Normally I would put in the percentages here, but I trust you all to do the math on this one.
This brings to mind another question, which I shall raise in a further blog post on another slow day, does Judge Connolly receive fewer motions like these than our judges who don't specifically require good cause? I.e., are parties who would otherwise just file late contentions and take their shot under Pennypack factors deciding not to do so because they know they can't show good cause?!
All this and more on next weeks episode of IPDE! (Batman theme plays)
We've talked before about MILs that are really stealth summary judgment motions, but now let's talk about MILs that are stealth Daubert motions and stealth motions to strike!
On Friday, Judge Burke denied a motion in limine to preclude the testimony, holding that it was really a Daubert motion, and the party had waived it by failing to present it by the deadline for Daubert motions:
ORAL ORDER: The Court . . . hereby DENIES [Defendants' Motion in Limine No. 1] for the following reasons: (1) [T]he Scheduling Order in this case provided that "[n]o Daubert motions or motions to strike expert testimony shall be filed unless discussed with the [C]ourt at [the status conference …
"Gather 'round, fellow developers, while I tell you the age-old tale of how we we have an implied license to Sprint's patents."AI-Generated, displayed with permission
Here's one I haven't seen before. In Sprint Communications Company L.P. v. WideOpenWest, Inc., C.A. No. 18-361-RGA (D. Del.), the defendant apparently sought to admit company "folklore" in support of its implied license defense.
The Court found that this "folklore" was relevant to the implied license defense:
While arguing for its second motion in limine (D.I. 433), Plaintiff Sprint raised the issue of certain privileged communications. . . . Plaintiffs second motion in limine sought to exclude testimony about company "folklore" regarding a right to practice Sprint's patents. Defendants plan to assert the affirmative defense of implied license, supported by this "folklore" testimony from ...
"I knew we forgot something..."AI-Generated, displayed with permission
Yesterday Judge Williams issued an oral order in Board of Regents, The University of Texas System v. Boston Scientific Corporation, C.A. No. 18-392-GBW (D. Del.) addressing a dispute about whether plaintiffs could offer evidence of copying or other secondary considerations after they failed to disclose those argument until just before trial.
In a lengthy oral order, Judge Williams held that they had waited too long and are now precluded from offering evidence of copying or certain other secondary considerations.
According to the Court, plaintiff had failed to disclose its secondary considerations arguments despite numerous opportunities:
ORAL ORDER: . . . Plaintiff had several prior opportunities to advise [defendant] …
Since 2021, Judge Connolly has occasionally issued orders asking parties to either consent to a magistrate judge or have their case re-assigned to a visiting judge. The parties in three out of five of that first round of cases consented, and we've seen several rounds of these orders since then.
The Court also offered parties a similar choice in the wake of the departure of Judge Stark, before Judge Williams was confirmed. I haven't seen hard numbers on this, but in May of last year we estimated that around 20% of those cases consented rather than waiting for the new district judge and risking re-assignment to a visiting judge.
These consent-or-visiting-judge referrals have continued through Judge …
Artist's rendition of a pretrial order printed without tabsJJ Ying, Unsplash
Oof, this one may have been painful. Last month in Victaulic Company v. ASC Engineered Solutions, LLC, C.A. No. 20-887-GBW-JLH (D. Del.), the defendant apparently asserted at least two non-infringement defenses, one based on a "groove" limitation and one based on a "radius" limitation.
The defendant asserted the groove limitation defense in response to a summary judgment motion. Then, the following series of events occurred:
December 6, 2022: The Court denies the summary judgment motion against which the defendant asserted the groove limitation defense
December 13, 2022: The parties filed their proposed pretrial order. In it, they included a joint statement of uncontested facts. …
This blog is for general informational purposes. It is not an offer to perform legal services, and should not be considered a substitute for legal advice. Nothing in this blog should be construed as forming an attorney-client relationship. If you have legal questions, please consult counsel in your jurisdiction.
